The United States Supreme Court recently struck down a provision of the Lanham Act that denies registration of disparaging trademarks.

In Matal v. Tam the Court unanimously ruled that the Lanham Act’s prohibition against registering disparaging trademarks with the United States Patent and Trademark Office (“USPTO”) violated the free speech clause of the First Amendment. This case involved an attempt by a member of an Asian-American rock band to register the trademark “THE SLANTS,” which is the name of the band. The band’s lead singer, Simon Tam, explained that the band chose this name to “reclaim the term and drain its denigrating force as a derogatory term for Asian persons.” The USPTO concluded that the term “slants” is a disparaging term for people of Asian descent and denied the trademark application based on the disparagement clause of the Lanham Act.

The band unsuccessfully appealed the USPTO's decision with the Trademark Trial and Appeal Board. The case then went to the United States Court of Appeals for the Federal Circuit, which ultimately reversed the decision on the grounds that the Lanham Act disparagement clause is unconstitutional under the First Amendment.

In its ruling, the Supreme Court rejected the government’s primary argument that trademarks are “government speech” – not subject to First Amendment restrictions – and, therefore, not “private speech.” The Court explained that if the government is expressing itself through the trademarks that it registers, then it is “babbling prodigiously and incoherently…expressing contradictory views and endorsing a vast array of commercial products and services.” The Court also noted that none of its prior precedent supports the idea that registered trademarks are government speech.

The disparagement provision of the Lanham Act has been in the news in recent years due to the dispute between the government and the NFL's Washington Redskins regarding the allegedly offensive nature of the team’s name. This decision will most likely resolve the dispute. In a recent New York Times article, Redskins lawyer Lisa Blatt was quoted as saying, “The Supreme Court vindicated the team’s position that the First Amendment blocks the government from denying or canceling a trademark registration based on the government’s opinion.”

The decision expands what marks may be afforded registration with the USPTO. If you have any questions about this case, please contact a Foster Swift intellectual property attorney.

John brings a unique perspective to Foster Swift with his practical experience as an entrepreneur, business owner, and manager. He focuses in the areas of business, tax, intellectual property and entertainment.